Once Out, Always Out

I have posted on a tendency to apply the discretionary power of the EPO Boards of Appeal to admit documents which had not been admitted by the Opposition procedure here. Other examples are  T1872/08, T1817/08  and T1485/08.

In brief, the Technical Board of Appeal argues in each of these decisions that it has no discretion on its own to admit documents which have not been admitted in the first instance for good reasons. Documents which have not been admitted in the first instance will not be admitted in the second instance either.

All these decisions refer to the decision T 640/91, Official Journal EPO 1994, 918 and terribly misunderstand this decision. The paragraph which is repeatedly cited relates to the question whether a refund of the appeal fees is justified because opposition division has violated the right to be heard by not admitting documents at a late stage and examines the way in which the first instance has exercised its discretion for this purpose.
A new decision in the same direction has been published today: T 1643/11. I really regret this development. The circumstances may be very different in the 2nd instance: Adjournment of the oral proceedings might have had to be necessary when the document was filed late in the Opposition Proceedings whereas the parties have plenty of time to study the documents when they are filed together with the appeal brief.

The approach taken by the TBA encourages parties to not even try filing documents at a late stage of the 1st instance but rather wait for the appeal in order not to produce evidence that the document "could have been filed in the 1st instance", which, according to the current attitude of the TBA, amounts to a death sentence of the evidence. This is clearly not beneficial for the procedural economy.

Does Withdrawing a Main Request Imply that Admissibility of Appeal Is Accepted?

After a first part of the oral proceedings in the opposition underlying the case T2157/10, the Opposition Division had expressed its preliminary opinion that the opposition was considered admissible and then turned to the substantive issues of the case.

The patentee then withdrew its main request and made one of its previous auxiliary requests its new main request. The patent was then maintained in amended form as requested proprietor.

 

The latter was, however, not satisfied with the decision and filed an appeal, the admissibility of which was obviously questionable because one might wonder if the appellant was not adversely affected by the decision.

 

The discussion in the oral proceedings in the first instance is summarized by the Technical Board of Appeal as follows (items [1.2] - [1.4]):

During those oral proceedings, the proprietor also raised the issue of whether the opposition was admissible (see minutes, p. 2, 7th par.). After discussion with the parties and deliberation, the opposition division stated that it "consider[ed]" the opposition to be admissible (see minutes p. 3, 5th par.). 

The board takes this to mean that the opposition division expressed its conclusion on this issue, but did not pronounce a decision at this point. Thereafter, the minutes (p. 3, pars. 2 and 3 from the bottom) report that "[t]he chairman asked the proprietor to clarify the requests on file: the rejection of the opposition or to maintain the patent in amended form" and that "[t]he proprietor said that his request was to maintain in amended form."

Hence, the interlocutory decision of the opposition division found in favour of the highest-ranking substantive request of the appellant.  

Moreover, in the board's view, the minutes must be understood to imply that the proprietor no longer requested the opposition division to find the opposition to be inadmissible. Any request to this effect which may have been made before was thereby withdrawn. (emphasis added).

This is how the patentee conceived this situation (cf. item [2.2]):

The subsequent request by the chairman of the opposition division that the proprietor clarify its request was exclusively related to substantive requests. It was clear at the time that what the proprietor was asked to clarify was on the basis of which sets of claims it requested that the patent be maintained. It was also clear, so the argument, that by making the substantive request that the patent be maintained in amended form, and irrespective of the fact that the basis for the amended patent was labelled "main request", the proprietor did not intend to withdraw its procedural request that the opposition be found inadmissible. Rather, maintenance in amended form was requested merely if the opposition division decided that the opposition was admissible.

The board of appeal rejected the appeal as inadmissible. This blogger is wondering whether this result could have been avoided if the patentee had expressed its intentions more clearly: Is it possible to appeal the decision to hold the opposition admissible without at the same time requesting the maintenance of the patent as granted?




 

Good Excuses, Bad Excuses

I have the impression that the EPO Boards of Appeal have an increasing tendency to not admit new documents or requests if the submitting party does not present good reasons for the late filing. Examples include e.g. T1914/08 (cf. item [2], where the Board asks for a "justification having a causal link to the present proceedings") or T1488/08 (cf. item[2.2] asking for "objective reasons").

It may be heretic but I would like to ask whether this approach is justified in view of the  nature of the proceedings before the EPO. The Boards of Appeal do clearly have the discretionary power not to admit new facts or requests. However, this power has to be exercised on the firm basis of the objectivity principle and the overriding interest in fair proceedings.

In my view, there are (at least) two principles limiting the discretionary power of the Boards. Firstly, the decison not to admit an amendment of the case should clearly not violate the right to be heard of the submitting party. Secondly, the boards (just as the opposition division) should not be forced to knowingly take wrong decisions. The first principle requires the admissibility of amendments constituting a reasonable reaction to events inside of or outside of the procedure and the second principle requires that documents of prima facie relevance should be admitted.

Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.

What about the excuse? The complexity of the submitted subject-matter is clearly independent of the quality of the excuse.

Further, the procedure will not be the more economical the better the excuse for the late filing is. Rather, the procedural economy allows for the non-admission of amendmens which would clearly not change the result of the procedure (e.g. the admission of the allegedly novelty-destroying Document D99 if the Board holds that the patent is not novel over D1 already). Furhter, procedural economy should not be mixed up with the Board's comfort.

Finally, we are left with the "current state of the proceedings". In my view, this means that the Boards should shift the point of equilibrium of their balance towards the non-admission side in the later the stages of the proceedings. However, this may affect the mechanism of the balance but the weights to put on the balance should remain unchanged.

The fact that the amendment is a direct response to new points raised by the other party may support as a positive weight the admissibility of an amendment for reasons of fairness and for the preservation of the the right to be heard. However, in my view, the lack of such reasons should not constitue a "negative" weight on the balance unless the Board has additional evidence supporting the suspicition that the late-filing is the result of procedural abuse. Procedural abuse is a severe accusation which should not be raised without by the Boards without very good grounds.

In view of these considerations, the reasons for not admitting amendments to the case mentioned in T1488/08 appear to be based on a doubtful exercise of discretion. Here is what the Board has to say:

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case.(Emphasis added).

 If this way of exercising the discretion was correct, this would imply that every amendment which is determined by procedural tactics is inadmissible. The fact that the prima facie relevance is checked only "for the sake of completeness" and not at the first place implies that this board has set its prioprities in a questionable way. The prima facie test would actually have been entirely sufficent to reject the new grounds.

 

When it comes to Money - J25/10

The EPO's legal board of appeal has noted in a  decision publised in the OJ that a decision not to refund 75% of the examination fees upon a withdrawal of the application has to be reasoned.

Following the withdrawal of a European patent application, a refusal by the Examining Division of a request for a 75% refund of the examination fee, on the basis that substantive examination had already begun (Article 11(b) RFees), must be based on facts which objectively demonstrate that this is so.

 In the case at issue, the examiner had simply alleged that he had already started the examination without giving any more detailed facts or evidence in support of this allegation. The board refers to the principles of the democratic legal order entailing the need to ensure predictability of jurisdiction and
hence legal certainty by preventing arbitrariness as set out in G 3/08.  Furhter, the board notes:

It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the Examination Division, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based. (cf. point 12 of the reasons, emphasis added).

In hope that the particular importance of the principles of the democratic legal order in cases where the EPO's finances are concerned does not imply that these principles are less important in cases which do not affect the EPO's finance.

 

Keeping the Doors Open – R 3/11

The last decision of the EPO’s Enlarged Board of Appeal (EBOA) addresses the critera of an objection under Rule 106 EPC, which reads:

A petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings.

This is what the EBOA has to say about the nature of the objection (Reasons 3.1):

Raising an objection pursuant to Rule 106 EPC is a procedural act and, when it is possible, a precondition for access to review by the Enlarged Board. It is an extraordinary legal remedy against final decisions of the Boards of Appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognize immediately and without doubt that an objection pursuant to Rule 106 EPC is intended. For the same reason such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on.

And further on:

… apart from, the usual phrases that the parties addressed the Board, after which the matter was discussed with the parties, and the reciting of the requests of the parties, the minutes contain the following:

"The Chairman asked the parties if they had any other Observations or requests and there were none."

This clearly contradicts the petitioner's position that the objection pursuant to Rule 106 EPC was in fact raised.

The absence in the minutes of an objection under Rule 106 EPC and of any request for correction of the minutes are strong indications, that such objection, if any, was at least not duly qualified, which is a necessary condition (see point 3.1 above).” (emphasis added)

In order to keep the possibility for filing a petition to review under Art. 112a (2) EPC, it is therefore highly advisable to take care that the objection as well as the decision to dismiss the objection figures in the minutes. Apparently simply murmuring the “usual phrases” (whatever these may be?) are not sufficient for this purpose.

Essentiallity Test Revisited - Deleting Features From the Claims before the EPO

K's law discusses the decision T 747/10 today, where the EPO technical board of appeal applies the "essentiallity test" in the Gidelines for examination as develpoed in T 0331/87 is applied and makes an attempt to put it into a more precise form.

This test says that the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:

1. the feature was not explained as essential in the disclosure;
   
2. the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
   
3. the replacement or removal requires no real modification of other features to compensate for the change.
   

The case at issue related to a light therapy apparatus with light sources connectable to a computer via an interface. Original claim 1 required that the interface does not only control the light sources but also serves as a power supply. Interestingly, the BoA argues that the "technical problem" mentioned under 2 is the "subjective technical problem":

A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.

In this case, the original specification had actually mentioned two technical problems:

While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources.

and comes to the conclustion that using the (USB-) interface for power supply does at least contribute to the solution of the second problem of improving the portability. Other alternatives (e.g. batteries) were not consistently disclosed. On the other hand, the board argues that the replacement of a feature with an equivalent one (which is originally disclosed) should be possible even tough the original feature may contribute to the technical solution of the subjective problem and comes to the conclusion that:

In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.

It is interesting for me that both the „classical“ decision T 0331/87 and this new decision appear to have problems with the line of demarcation between the requirement of “support by the specification” of Art. 84 EPC and Art. 123 EPC. This is very clear in T 0331/87, where the board argues in item 3 of the reasons:

For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (…) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application […]. In other words, it is to examine whether the claim as amended is supported by the description as filed.

.

The argument is a little more hidden in the decision T 747/10, but it appears that distinguishing between cases where more than one alternative is mentioned and cases where only one alternative is mentioned is equivalent to answering the question whether or not the broader claim is supported by the specification and is limited to the scope within which the invention makes a technical contribution to the prior art.

So why did the BoA not refer to Art. 84 EPC?

For the ”Houdaille decision T 0331/87, the case is clear: This was an opposition procedure and the BoA was simply not entitled to carry out an examination on Art. 84 EPC. In the light of this finding, it appears that this groundbreaking decision is circumventing the statutory limitation to the grounds for opposition set out in Art. 100EPC and has to be questioned.

For the case T 747/10, the application of Art. 84 EPC would have required reverting the case to the Examining division for carrying out the examination on this article.

I wonder if failure to do so could be considered a violation of the applicant’s right to be heard?

All In or Cashing Out - T 144/09 and the ex parte procedure

This week, both K's law and Laurent Teyssèdre's french blog have commented on the decision T 144/09 wherein the failure of the patentee to file a claim suggested by the opposition lead to a refusal of the same claim in the pertinent appeal procedure on the basis of Art 12(4) RPBA.

Article 12(4) RPBA reads as follows:

(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2).

In this case, the patentee had delibeartely chosen not to cancel a feature allegedly offending Art. 123 EPC in any of the requests filed in the opposition and the board finds:
A request can be held inadmissible under Article 12(4) RPBA when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (Reasons 1.4).

Whilst the diligent patent attorney will immediately learn from this decision that he should better file as many auxiliary requests as possible overcoming the objections raised by the OD in the opposition proceedure, the situation turns out to be more complicated in the ex parte procedure.

In the opposition, if the patent is maintained in amended form according to the auxiliary request, the patentee has the opportunity to consider appealing this decision while relying on the principle of non reformatio in peius to at least have saved the patent according to the auxiliary request as a fallback possition.

In the examinaition procedure, if the applicant follows a "suggestion" of the Examining Division and files amended documents as an auxiliary request, the ED will very likely issue a communiation under R71(3)EPC according to the auxiliary request and, if the applicant apprioves the documents intended for grant, has no possibility to appeal the decision to grant due to his approval.

If, on the other hand, the applicant disapproves the documents of the communication under R71(3)EPC, this is entirely equivalent to a withdrawal of his auxiliary request such that he may be barred from prosecuting this request in the appeal procedure just as if the auxiliary request had not been filed.

There is actually no reliable possibility to keep the ED's suggestion as a fallback position as in the opposition procedure and to have the pertinent questions of law examined by the BoA without risking to lose the entire patent. In poker you would say the suggestion of the ED puts the applicant in an "all in or cashing out" position.

Clarity is not at issue in Nullity after the EPO-limitation procedure

To the best of my knowledge, there has not been any case-law on the relation between the new EPO limitation procedure (Art. 105a and 105b EPC) and the nullity procedure.

The first decision in this regard has now been issued by the German Supreme Court (BGH, X ZR 72/08 "Kosmetisches Sonnenschutzmittel III).

There is a small catalogue of grounds for nullity of german patents, which is similar to the grounds for opposition in the EPC. Just as in the EPC, clarity does not count among these grounds.

However, if amendments are made during the nullity procedure in order to defend the patent in a limited form. the full examination including clarity is opened for theese amendments.

In the case at issue, the amendments were not made in the nullity procedure at the Federal German Patent Court (Bundespatentgericht) but in a co-pending limitation procedure before the EPO.

The BGH has now ruled that the claim as limited in the EPO-limitation procedure is to be considered as the valid patent claim and may not be examined for clarity because a pertinent ground for nullity is missing.

A central revocation for European Patents at the EPO

In a panel discussion on the case-law of the EPO boards of appeal two weeks ago here in Munich, some poeple including Rudolf Teschemacher (former chairman of an EPO Board of Appeal) have noted that interestingly, experience has shown that the total number of appeals filed against granted patents decreases when the delay for filing oppositions is increased.

This somewhat counter-intuitive relation may be explained by the fact that the majority of oppositions is filed for precautionary reasons such that the longer the delay for filing the opposition, the bigger the fraction of cases where an appeal turns out to be unneccessary.

Looking at the German nullity procedure, there are practically no nullity suits filed as a "precautionary measure" but in almost every case there is a parallel infringement action pending. This may be due to the high costs of the nullity procedure on the one hand but also due to the lack of time pressure.

This means that a prolongation of the 9-months term for filing an opposition would reduce the total number of appeals and would concentrate the appeal procedure to cases of high economical importance.

Following this thought to the extreme would correspond to a prolongation of the delay for filing an opposition at the EPO up to 20 years from the filing date. The result would be a central revocation instance at the EPO realizing one of the two aims of the "European and EU Patent Court Agreement" project recently rejected by the European Court of Justice.

One of the interesting aspects of this idea is that the time limit for filing the opposition may be amended by the administrative council (Art. 33(1)a EPC) with a majority of three quarters (Art. 35(2) EPC) and thus in a very simple way.